R Thomas & a Garnham v Jiejing Pty Ltd - [1994] APO 4

OFFICIAL notice

decision of a delegate of the commissioner of patents

Application : No. 42052/89 in the name of R Thomas & A Garnham

Title: Symbol Definition Apparatus

Action: Extension of time for acceptance under S.223(1). Objection thereto by Jiejing Pty Ltd

Decision: Issued .
1.An extension of time under ss.223(1) granted, on the basis that a delegate failed to recognise that a different extension of time under ss.223(1) was justified, and that failure to so recognise prevented acceptance from occurring within the time allowed.

2.Errors of a person which are claimed to be due to incorrect advice from the Commissioner fall under ss.223(1) only if the person:
-sought advice from the Commissioner;
-in seeking the advice, provided all relevant information, or provided sufficient information for the Commissioner to realise that further information was required before providing the advice;
-the advice given was demonstrably wrong;
-the applicant acted on that wrong advice; and
-as a result, a relevant act was not done within the required time.

3.Following the decision dated 24 December 1993 of the Federal Court, on petty patent 616154, Commissioner not prepared to accept the application in its present form; an extension of time under s.223(2)(b) granted to enable the applicant to propose further amendments.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 42052/89 by R Thomas & A Garnham, a request under s.223(1) for extensions of time for acceptance of the application, and objection by Jiejing Pty Ltd

background

Application 42052/89 is a national phase application derived from PCT application PCT/AU89/00379 filed on 5 September 1989 which claims priority from Australian provisional PJ 0247 of 5 September 1988.

The first examination report was issued on 14 June 1991. The report indicated (as usual for first examination reports) that:

You have 21 months from the date of this report to overcome my objection(s). However, if you file your response after 12 months from the date of this report a response fee is payable."

The original "final date for acceptance" of the application was therefore 14 March 1993.

Subsequently (as detailed below) there were two extensions of time for acceptance granted under the provisions of s.223(2). The application has not yet been accepted. The present matter concerns an application under s.223(1) alleging an error or omission by the Commissioner.

Initially, the parties to the present action did not request to be heard in the matter, but requested a decision based on written submissions. I gave each party a considerable period to file and serve their arguments in support of their position in the matter, and a period to file and serve any submissions in response. Subsequently Jiejing indicated that they did not think that a correct decision could be arrived at without an oral hearing at which they could put certain questions to Mr Thomas, and requested to be heard. I acceded to that request, and a hearing was set down in Brisbane for 16 December.

Because the…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [1994] APO 4
Decision Date: 13 January 1994

CaseChat Overview and Summary

The case of R Thomas & a Garnham v Jiejing Pty Ltd involved a patent application for a Symbol Definition Apparatus. The applicants sought an extension of time for acceptance under section 223(1) of the Patents Act 1990, which was objected to by Jiejing Pty Ltd. The court had to decide whether the failure to gain acceptance by the due date was due to an error or omission by the Commissioner. The court found that there was a clear causal relationship between the actions of the Commissioner and the failure for the required action to occur in the required time, for section 223(1) to be applicable. The court granted an extension of time under section 223(1) from 14 August 1993 to the date of the decision. The court also granted a further extension of time of 2 months from the date of the decision under the provisions of section 223(2)(b) to allow the applicants time to propose further amendments to their specification.

The court concluded that the application would have been lawfully accepted on 30 August 1993, had it not been for errors or omissions of the Commissioner. The court granted an extension of time for acceptance under section 223(1) from 14 August 1993 to the date of the decision, on the basis that any objections that Jiejing might have raised had their letter been placed on the file before 30 August have been dealt with in the present proceedings. The court also found that the circumstance of the decision of Cooper J in the matter of Petty Patent 616154 (divided from the present application) is a circumstance beyond the control of the applicant, and therefore granted an extension of time of 2 months from the date of the decision under the provisions of either section 223(2)(b) or 223(1), in order to address matters arising from that decision.

The court emphasized that all lawful objections to the application must be overcome by the end of the extension period, otherwise the application will not be accepted. The court also noted that if the applicants want to be heard by the Commissioner on the applicability of the decision of Cooper J to the present application, they should make a request to be heard as soon as possible.

Orders